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Sheridan Ross Case Study:

Protecting core technologies across the globe

Client:
Australian Genetic Diagnostic Company

Background:
The Firm has for almost a decade represented a company who invented and commercialized pioneering technology useful in performing various DNA analysis methods.  The company next acquired a suite of worldwide patents covering various aspects of the inventive methods.  Over the years, these methods became adopted as an industry standard, with genetic diagnostic analysis and pharmaceutical companies worldwide using them to create significant value for themselves, but without paying the Company for the benefits they were receiving for use of the technologies.  The Company wished to be compensated for the investments it had made in research and development, but was having trouble getting users of its technologies to voluntarily pay for that use.  Our team of professionals helped them to develop and then implement a strategy to recover just compensation for their investments.

IP/Business Strategy:
A part of the strategy was to bring multiple actions, simultaneously, in relevant United States Federal District Courts for infringement.  That way, the infringing company would understand that our client was serious about protecting its technology.  They could then either accept a license on non-discriminatory terms or, if they disputed the claim, let the courts determine whether their conduct violated our client’s patent rights.

Situation:
The client brought numerous cases throughout the United States, with the majority of those resolving quickly.  In some cases, infringers filed petitions to have claims of a key patent ruled invalid by the United States Patent and Trademark Office (“USPTO”).  Four such proceedings were instituted over a five year period.  Several infringers also challenged the validity of that key patent in various courts.

Results:
We successfully defended our client’s patent against all of the USPTO challenges and, ultimately, resolved a number of additional actions as a result.  We also defeated two of the three Court based challenges.  The third challenge was initially successful, with the client directing that we appeal the decision to the Federal Circuit Court of Appeals.  Should that appeal resolve favorably to our client, we will continue to press the strategy developed and implemented more than a decade ago and which has netted for our client tens of millions of dollars in value on their revolutionary inventions.

Our Team:
Rob Brunelli 
Gary Connell
Ben Lieb
Rita Sanzgiri
Hiwot Covell

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